Opinion
Civil No. 21-10778-LTS
01-21-2022
RIGGS TECHNOLOGY HOLDINGS, LLC, Plaintiff, v. CENGAGE LEARNING, INC., Defendant.
William P. Ramey, III, Ramey & Schwaller, LLP, Houston, TX, John T. Martin, Michaela M. Weaver, KJC Law Firm, LLC, Boston, MA, for Plaintiff. Neil J. McNabnay, Pro Hac Vice, Fish & Richardson P.C., Dallas, TX, Kayleigh E. McGlynn, Fish & Richardson, P.C., Boston, MA, for Defendant.
William P. Ramey, III, Ramey & Schwaller, LLP, Houston, TX, John T. Martin, Michaela M. Weaver, KJC Law Firm, LLC, Boston, MA, for Plaintiff.
Neil J. McNabnay, Pro Hac Vice, Fish & Richardson P.C., Dallas, TX, Kayleigh E. McGlynn, Fish & Richardson, P.C., Boston, MA, for Defendant.
MEMORANDUM AND ORDER ON MOTION TO DISMISS
SOROKIN, United States District Judge
Riggs Technology Holdings, LLC ("Riggs") brings this patent infringement action alleging that Cengage Learning, Inc. ("Cengage"), infringes "one or more claims" of U.S. Patent No. 7,299,067 ("the '067 patent"). Doc. No. 1 ¶ 8. Cengage moves to dismiss the complaint on the grounds that the '067 patent is directed to patent-ineligible subject matter under 35 U.S.C. § 101. Doc. No. 13. The motion is fully briefed, and neither party has requested oral argument. Doc. Nos. 14, 28, 34. For the reasons that follow, Cengage's motion is ALLOWED.
Citations to "Doc. No. ___" reference documents appearing on the court's electronic docketing system; pincites are to the page numbers in the ECF header.
I. BACKGROUND
The '067 patent is entitled "Methods and Systems for Managing the Provision of Training Provided Remotely Through Electronic Data Networks to Users of Remote Electronic Devices." Doc. No. 1-1 at 1. The claimed invention is directed to providing training "through networks to computers and portable hand held devices" including "PDAs, pagers, and wireless phones." Id. (Abstract). It also includes tracking and recording such training, identifying and authenticating users receiving such training, and certifying the results of such training. Id.; accord id. at 34 (Technical Field of the Invention). The specification explains that the '067 patent is intended to solve various logistical and scheduling problems employers confront when arranging necessary job training for employees at in-person programs, via satellite-based instruction, or online through wired computer terminals. Id. at 34-35 (Background of the Invention).
As explained in the patent:
The present inventor has recognized the convenience that online training and education is bringing to busy workers and professional[s] since the advent of the Internet. The present inventor, however, has also recognized that vast improvements in wireless technology can further enhance current offerings in online education and current training applications .... The present inventor has realized that, what is needed in the training field is an interactive process that enables wireless education, instruction and/or professional development via portable, wireless handheld computer systems. The current invention enables users of hand held computers wirelessly coupled to a network (e.g., Internet) to engage in training (e.g., via a multimedia presentation), be evaluated on the understanding gained by the user after the training (e.g., interactive questioning), and allow for reporting (e.g., certification of course completion) of the results of a user's activity and evaluation to a course administrator. Training data can also be used to verify, evaluate, and enhance training, course, student and/or teacher performance and/or development.... The present inventor has therefore developed new methods and systems for providing and managing the provision to and execution of training by users via handheld wireless devices ....
Id. at 35. The breadth of the invention is plain from the language of the patent. See, e.g., id. at 35 (defining "training" to include "all forms of education, instruction and training that the present invention can broadly apply"); id. at 37 (stating the invention "is to be accorded the widest scope consistent with principles and features disclosed herein").
The '067 patent contains three dozen figures, the vast majority of which are "screen shots that are representative of multimedia content that can be associated with methods for carrying o[ut] the present invention." Doc. No. 1-1 at 2-33, 36-37. None are reproduced in the complaint, and no party suggests any figure is especially pertinent to the issues now pending.
The '067 patent has three independent claims—claims 1 and 7, both "method" claims, and claim 13, a "system" claim. Id. at 48. The complaint focuses its allegations on claim 1, which the parties agree is representative for present purposes. Doc. No. 1 ¶ 9; Doc. No. 14 at 12-13; Doc. No. 28 at 5. It recites:
1. A method of managing training completed remotely at a hand held device, said method comprising the step of:
receiving at a training server training data transmitted to the training server through a data network from a user of a hand held device, the training data representing training taken by the user at [sic] hand held device;
receiving identifying information for the user of a hand held device concurrently with the training data file;
identifying the user of the hand held device;
authenticating the identify [sic] of the user of the hand held device by requesting authentication data from the user and comparing the authentication data with a master user identification template containing authentication data associated with the user and accessible by the training server to determine if said comparison authenticates the user's identify [sic] as an authorized trainee;
recording the training data in memory associated with the training server;
locating at least one training file contained within the training data;
determining status of the training file by comparing the training file with an associated master training template accessible from memory by the training server, the status including a determination if training represented by the training file meets a set criterion including at least one of: pending, incomplete, failed, passed; and
recording training status in memory.
Doc. No. 1-1 at 48.
II. LEGAL STANDARD
Federal courts must dismiss cases that fail to state a claim upon which relief can be granted. Fed. R. Civ. P. 12(b)(6). "Though the usual basis for a 12(b)(6) motion is the plaintiff's failure to plead sufficient facts in its complaint, a motion to dismiss ‘may sometimes be premised on the inevitable success of an affirmative defense,’ " such as patent invalidity. Oxford Immunotec Ltd. v. Qiagen, Inc., No. 15-cv-13124, 2016 WL 5746639, at *3 (D. Mass. Aug. 31, 2016) (quoting Nisselson v. Lernout, 469 F.3d 143, 150 (1st Cir. 2006) ). Dismissal is warranted if "the only plausible reading of the patent" the plaintiff alleges was infringed "is one that demonstrates that the patent claims cover subject matter that is not eligible for patenting." Id. (quoting Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013), and OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015) ); see also In re TLI Commc'ns LLC Patent Litig., 823 F.3d 607, 609-10 (Fed. Cir. 2016) (affirming grant of a motion to dismiss based on ineligibility).
Subject matter eligibility is a threshold inquiry and a question of law. Bilski v. Kappos, 561 U.S. 593, 602, 130 S.Ct. 3218, 177 L.Ed.2d 792 (2010). Section 101 of the Patent Act provides that "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore." 35 U.S.C. § 101. The broad language of this provision is subject to "three specific exceptions": "laws of nature, physical phenomena, and abstract ideas" are not patentable. Bilski, 561 U.S. at 601, 130 S.Ct. 3218. A two-step inquiry determines whether these exceptions apply. First, a court must "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014) ; accord Mayo Collab. Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77, 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012). If they are so directed, a court then "consider[s] the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application." Alice, 573 U.S. at 217, 134 S.Ct. 2347 (quotation marks omitted); accord Mayo, 566 U.S. at 77-80, 132 S.Ct. 1289.
If the claims are not directed at one of the identified concepts, the inquiry ends, and the exceptions to § 101 are not implicated.
Applying the Alice test to claims challenged under the "abstract idea" exception, courts first evaluate "the focus of the claimed advance over the prior art to determine if the claim's character as a whole is directed to excluded subject matter." Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quotation marks and citation omitted). In the context of computer-related technology, a patent-eligible claim is one directed to a specific "improvement in computer capabilities," rather than "an ‘abstract idea’ for which computers are invoked merely as a tool." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016) ; accord TLI Commc'ns, 823 F.3d at 612-13. Also relevant to the inquiry is whether "the claimed invention is entirely functional in nature"—i.e., whether it recites software and other generic computer-related components that perform certain functions, without claiming or describing "how to implement" the desired functions. Affinity Labs, 838 F.3d at 1258. If so, the claimed invention is likely directed to an abstract idea, and the analysis proceeds to step two.
To escape ineligibility at that step, "more is required than well-understood, routine, conventional activity already engaged in by the scientific community" in order "to transform the claim into significantly more than a patent upon the ineligible concept itself." Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016). It is not enough, for purposes of this analysis, to simply state an abstract idea and then "add[ ] the words ‘apply it,’ " Mayo, 566 U.S. at 72, 132 S.Ct. 1289, nor does "[t]he introduction of a computer into the claims" satisfy step two, Alice, 573 U.S. at 222, 134 S.Ct. 2347.
III. DISCUSSION
The first step of the Alice inquiry points directly to ineligibility here. Whether the focus is articulated as Cengage urges (i.e., "remotely managing training," Doc. No. 14 at 6) or as Riggs suggests (i.e., "allowing a user to access and complete training at anytime and anywhere," Doc. No. 28 at 8), the '067 patent is plainly drawn to an abstract idea. Indeed, the concept underlying the claims of the '067 patent —providing, managing, and/or documenting training completed remotely on a handheld device—is akin to those found in claims the Federal Circuit has deemed abstract and ineligible. See, e.g., Affinity Labs, 838 F.3d at 1258 (finding ineligible a patent directed to the "abstract idea" of "providing out-of-region access to regional broadcast content"); TLI Commc'ns, 823 F.3d at 610, 611 (finding ineligible a patent directed to "the abstract idea of classifying and storing digital images in an organized manner"); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (finding ineligible a patent directed to "the abstract idea of showing an advertisement before delivering free content" even where "certain additional limitations, such as consulting an activity log, add a degree of particularity"); cf. Pres. Wellness Techs. LLC v. Allscripts Healthcare Solutions, 2:15-CV-1559, 2016 WL 2742379, *8 (E.D. Tex. May 10, 2016), aff'd, 684 F. App'x 970 (Fed. Cir. 2017) (finding ineligible a patent claiming "a network-based system [to] manage medical records [and] allow patients and physicians different levels of access" but disclosing no "technological solution that enables that function to be performed in a certain manner").
Considering the elements of the claims and their character as a whole, the Court finds that the '067 patent and its claimed "advance" describe an existing process (providing and managing training) and propose using existing technology (devices which access networks and servers remotely and wirelessly) to achieve the abstract end-result at the heart of the patent (providing wireless, remote access to training programs). Limiting the abstract idea at issue to one context—training administered and completed via handheld, wireless devices—does not change the step-one analysis of the focus of the patent's claims, as it does not suffice to establish an improvement over existing systems or a novel solution to a technological problem. Affinity Labs, 838 F.3d at 1258-59 ; TLI Commc'ns, 823 F.3d at 612-13 ; cf. Enfish, 822 F.3d at 1330-37 (finding eligible a patent claiming a specific and "self-referential" system for storing information in a computer). Nor do the limitations recited in any dependent claim add anything to the abstract idea analysis, for reasons explained by Cengage in its papers. See Doc. No. 14 at 12-13 (identifying limitations contained in dependent claims, none of which confer an inventive concept capable of impacting the eligibility analysis).
Accordingly, the Court proceeds to step two of the Alice analysis. The '067 patent claims contain no inventive concept that can transform the abstract idea to which they are drawn into patent-eligible subject matter because the claimed components and features (e.g., "training data," "server," "data network," "identifying information," "hand held device," and "authentication data")—none of which Riggs claims to have invented—are all generically defined and conventional. See, e.g., Affinity Labs, 838 F.3d at 1263 (affirming dismissal of infringement claim where "the abstract idea of remote delivery" would "be implemented using the conventional components and functions generic to cellular telephones"); Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) ("Nothing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information."); see generally Doc. No. 1-1 (referring throughout to conventional computer-related technology used as intended). At bottom, the '067 patent discloses the concept or idea that a process (training) already being performed as a human activity (at in-person and satellite-broadcast events) and via wired computers (online at desktop terminals) could also be performed, in more times and at more places, using wireless technology and handheld devices (which already existed and were in use for other purposes), without proposing or claiming any improvement to such technology or devices in order to accomplish the stated (abstract) result. See Yu v. Apple Inc., 1 F.4th 1040, 1045 (Fed. Cir. 2021) (explaining that a claimed configuration of existing, conventional computer hardware "itself is not an advance" and "does not add sufficient substance to [an] underlying abstract idea" to render it eligible). Such a claim is not eligible for a patent. See generally NetSoc, LLC v. Match Group, LLC, 838 F. App'x 544 (Fed. Cir. 2020).
IV. CONCLUSION
Accordingly, the Court concludes that the claims of the '067 patent are not drawn to patent-eligible subject matter under 35 U.S.C. § 101. Cengage's Motion to Dismiss (Doc. No. 13) is ALLOWED, and Riggs's complaint is DISMISSED.
This finding echoes the conclusion reached recently by another federal court resolving a nearly identical challenge to the same patent at issue here. See Riggs Tech. Holdings, LLC v. Vagaro, Inc., No. 21-cv-7927, 2022 WL 74179, at * (N.D. Cal. Jan. 7, 2022) (finding "[e]very claim in the '067 patent is invalid under section 101" and dismissing complaint without leave to amend).
Riggs has not requested an opportunity to amend its complaint, nor does anything before the Court suggest that it could supplement the allegations in a way that would alter this Court's determination that the patent, on its face, claims an ineligible abstract idea.
The clerk shall close this case.